OPPOSITION DIVISION
OPPOSITION No B 2 412 917
Bayerische Motoren Werke Aktiengesellschaft, Petuelring 130, 80809 München,
Germany (opponent), represented by KLAKA, Delpstr. 4, 81679 München, Germany
(professional representative)
a g a i n s t
Home Focus Development Limited, Trustnet Chambers Limited, P.O. Box 3444,
Road Town, Tortola, British Virgin Islands (applicant), represented by DRACCO
CANDY S.L., Francesc Cotoli, Via Augusta, 13-15, Oficina. 211, Barcelona, Spain
(professional representative).
On 23/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 412 917 is upheld for all the contested goods and services.
2. European Union trade mark application No 11 110 913 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
Preliminary Remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 11 110 913 ‘Mini Models’. The opposition is based
on, inter alia, European Union trade mark registrations Nos 10 374 684 and
9 601 931 . The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the
goods or services in question, under the assumption that they bear the marks in
question, come from the same undertaking or, as the case may be, from
economically linked undertakings. Whether a likelihood of confusion exists depends
Decision on Opposition No B 2 412 917 page: 2 of 10
on the appreciation in a global assessment of several factors, which are
interdependent. These factors include the similarity of the signs, the similarity of the
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s European Union trade mark registrations Nos 10 374 684 and 9 601 931.
a) The goods and services
The Opposition Division notes that on 12/09/2016, the opponent filed a declaration
pursuant to Article 28(8) EUTMR. However, the result of the declaration (still pending)
and the possible goods and services added to the opponent’s list cannot influence
the outcome of the present proceedings as the opposition is entirely successful
based on the goods and services currently registered. Therefore, it is not necessary
to suspend the present proceedings until a final decision is taken concerning the
opponent’s declaration.
The goods and services on which the opposition is based are the following:
1) European Union trade mark registrations No 10 374 684
Class 3: Bleaching preparations and other substances for laundry use; cleaning,
polishing, scouring and abrasive preparations; soaps; perfumery, essential oils,
cosmetics, hair lotions; dentifrices.
Class 6: Ironmongery, small items of metal hardware; safes; goods of common
metal, not included in other classes.
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical,
weighing, measuring, signalling, checking (supervision), life-saving and teaching
apparatus and instruments; apparatus and instruments for conducting, switching,
transforming, accumulating, regulating or controlling electricity; apparatus for
recording, transmission or reproduction of sound or images; magnetic data carriers,
recording discs; automatic vending machines and mechanisms for coin-operated
apparatus; cash registers, calculating machines, data processing equipment and
computers; fire-extinguishing apparatus; spectacles, optical vision aids, spectacle
lenses and spectacle frames, sunglasses, reading eyeglasses and corrective lenses;
mobile telephones and accessories.
Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating,
drying, ventilating, water supply and sanitary purposes.
Class 12: Vehicles, bicycles and bicycle accessories; apparatus for locomotion by
land, air or water; prams (baby carriages) and accessories for prams, seats for
children and accessories for seats for children.
Class 14: Precious metals and their alloys and goods in precious metals or coated
therewith, not included in other classes; jewellery, precious stones; decorative and
costume jewellery, amulets, charms (jewellery), chains, bangles, brooches,
necklaces, tie clips and pins, cuff links; horological and chronometric instruments,
chronographs, wristwatches.
Class 16: Paper, cardboard and goods made from these materials, not included in
other classes; printed matter, printed publications and books, periodicals and coffee
table books; book binding material; photographs; stationery, in particular writing
Decision on Opposition No B 2 412 917 page: 3 of 10
implements, writing materials, writing pads or drawing pads, note pads, diaries,
calendars, cards, including greetings cards, envelopes and wrapping paper;
materials for school, in particular paint brush sets, colouring crayons, pencil cases,
adhesives for stationery or household use; artists’ materials; paint brushes;
typewriters and office requisites (except furniture); instructional and teaching material
(expect apparatus); plastic materials for packaging (not included in other classes);
printers’ type; printing blocks.
Class 18: Leather and imitations of leather, and goods made of these materials and
not included in other classes; animal skins, hides; trunks and travelling bags;
briefcases, card holders (wallets), handbags; umbrellas, parasols and walking sticks;
whips, harness and saddlery.
Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of
wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-
of-pearl, meerschaum and substitutes for all these materials, or of plastics.
Class 21: Household or kitchen utensils and containers; lunch boxes; piggy banks
and money boxes for school children and pupils; combs and sponges; brushes (other
than for painting); brush-making materials; articles for cleaning purposes; steelwool;
unworked or semi-worked glass (except glass used in building); glassware, porcelain
and earthenware not included in other classes.
Class 24: Textiles and textile goods, not included in other classes; bed and table
covers.
Class 25: Clothing, footwear, headgear.
Class 26: Lace and embroidery, ribbons and braid; buttons, hook and eyes, belt
clasps; needles; artificial flowers.
Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering
existing floors; wall hangings (non-textile).
Class 28: Games and playthings; gymnastic and sporting articles not included in
other classes; decorations for christmas trees.
2) European Union trade mark registrations No 9 601 931
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago coffee substitutes; flour and
preparations made from cereals, bread, pastry and confectionery, ices; chocolates;
honey, treacle; yeast, baking-powder, salt, mustard; vinegar, sauces (condiments);
spices.
Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and
fruit juices; syrups and other preparations for making beverages.
Class 41: Education; providing of training; entertainment; sporting and cultural
activities.
The contested goods and services are the following:
Class 14: Precious metals and their alloys.
Class 16: Writing utensils and materials, namely pencils and pencil sharpeners,
ballpens, brushes, markers, chalk, staplers, hole punchers, rulers and other
accessories for writing and drawing, and other cardboard and paper articles, namely
but not limited to albums, boxes of paper and cardboard, writing pads, writing blocks,
notebooks, booklets, wrapping paper, greeting cards, trading cards, labels, stickers
and other cardboard and paper articles for among other office and school purposes.
Decision on Opposition No B 2 412 917 page: 4 of 10
Class 28: Games and toys, namely board games, card games, action type target
games, and parlour games; beanbags; game boards for trading card games.
Class 30: Confectionery, namely sweets, drops, boiled sweets, lollipops of any kind,
pastilles, wine gum, jellies, bubble gum, chewing gum, jelly beans, licorice,
chocolate, marzipan, candy strips, liquid candy, candy gel, candy syrup,
marshmallows, candy foam, candy powder, biscuits, cakes, pastry.
Class 41: Education; providing of training; entertainment; sporting and cultural
activities, includes electronic games services provided by means of the internet,
mobile phones, mobile devices; downloadable games and applications for such
platforms; the provision of on-line electronic publications and digital music from the
internet, mobile phones and mobile devices.
An interpretation of the wording of the list of goods and services is required to
determine the scope of protection of these goods and services.
The term ‘in particular’ used in the opponent’s list of goods and services indicates
that the specific goods and services are only examples of items included in the
category and that protection is not restricted to them. In other words, it introduces a
non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’ used in the applicant’s list of goods and services to show
the relationship of individual goods and services to a broader category, is exclusive
and restricts the scope of protection only to the goods and services specifically listed.
Contested goods in Class 14
Precious metals and their alloys are identically included in the opponent’s and the
applicant’s lists of goods.
Contested goods in Class 16
The contested wrapping paper; writing pads are identically included in the opponent’s
list of goods.
The contested writing utensils and materials, namely pencils and pencil sharpeners,
ballpens, brushes, markers, chalk, staplers, hole punchers, rulers and other
accessories for writing and drawing are contained in the opponent’s broad category
of stationery. These goods are, therefore, identical.
The contested writing blocks; notebooks overlap and are, therefore, identical with the
opponent’s note pads.
The contested greeting cards, trading cards are contained in and, therefore, identical
with the opponent’s broad category of cards.
The opponent’s goods made from these materials (i.e. from paper, cardboard), not
included in other classes and the remaining contested goods, namely, other
cardboard and paper articles, namely but not limited to albums, boxes of paper and
cardboard, booklets, labels, stickers and other cardboard and paper articles for
among other office and school purposes coincide in their nature. Their distribution
channel, in the broadest sense, may also be the same in that they are usually
available at the stationery section of outlets. To that extent these goods are similar to
Decision on Opposition No B 2 412 917 page: 5 of 10
a low degree. However, in the absence of an express limitation by the opponent in
order to clarify its goods, it cannot be assumed that they coincide in other criteria.
Contested goods in Class 28
The contested games and toys, namely board games, card games, action type target
games, and parlour games; beanbags; game boards for trading card games are
either identical with or contained in the opponent’s broad category of games and
playthings. These goods are, therefore, identical.
Contested goods in Class 30
The contested confectionery, namely sweets, drops, boiled sweets, lollipops of any
kind, pastilles, wine gum, jellies, bubble gum, chewing gum, jelly beans, licorice,
chocolate, marzipan, candy strips, liquid candy, candy gel, candy syrup,
marshmallows, candy foam, candy powder, are either identical with or contained in
the opponent’s broad category of confectionery. These goods are, therefore,
identical.
The contested biscuits, cakes, pastry are identical with or contained in the opponent’s
pastry.
Contested services in Class 41
The contested education; providing of training; entertainment; sporting and cultural
activities, includes electronic games services provided by means of the internet,
mobile phones, mobile devices; the provision of on-line electronic publications and
digital music from the internet, mobile phones and mobile devices are either identical
with or contained in the opponent’s broad categories of education; providing of
training; entertainment; sporting and cultural activities. These goods are, therefore,
identical.
The contested downloadable games and applications for such platforms are
programmes that are available for the user. As such, these goods and the opponent’s
computers in Class 9 can coincide in their manufacturers, target public and
distribution channels. Therefore, these goods in conflict aresimilar.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also
be borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
In the present case, the goods and services found to be identical and similar to a low
degree are directed both at the public at large and at professional public.
The degree of attention is considered to be average.
Decision on Opposition No B 2 412 917 page: 6 of 10
c) The signs
EUTM No 10 374 684
EUTM No 9 601 931
MINI MODELS
Earlier trade marks Contested sign
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in
question must be based on the overall impression given by the marks, bearing in
mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95,
Sabèl, EU:C:1997:528, § 23).
The contested sign consists of the English words ‘MINI MODELS’ which will also be
understood throughout the relevant territory given the identical or highly similar
equivalents in the relevant languages. Although the words of the sign will convey the
idea of a miniature model and, thus, allude to a possible characteristics of some of
the goods at issue, namely the size thereof, it is still sufficiently abstract to retain the
necessary degree of distinctiveness. In fact, this was confirmed in the Board of
Appeal decision that had allowed the contested application to proceed for the goods
and services relevant in the present proceedings (14/01/2014, R 449/2013-2, Mini
Models).
The earlier marks comprise the word ‘MINI’ in a black oval shape which is placed
between two wing-like devices. ‘MINI’ will be understood throughout the relevant
territory as referring to size while the device elements serve as decoration and as a
frame in which the word is placed.
None of the elements of either sign can be considered more dominant that their other
elements.
Visually, the signs coincide in the word ‘MINI’ being the only word in the earlier
signs, and they differ in the contested sign’s additional word ‘Models’ and in the
figurative elements of the earlier signs. As explained above, the earlier signs’
figurative elements are likely to be viewed as decoration and serve as a frame in
which the word ‘Mini’ is placed. Consequently, the consumers’ attention will focus on
the word element which is also present as the initial word of the contested sign.
Furthermore, since consumers read from left to right, less attention will be given to
the contested sign’s second word. Overall, they are considered similar to an average
degree.
Decision on Opposition No B 2 412 917 page: 7 of 10
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the pronunciation of the signs coincides in the sound of the letters
‘Mini’ present identically in both signs. The pronunciation differs in the sound of the
word ‛Models’ of the contested mark, which has no counterpart in the earlier signs.
Given the importance of the fact that the contested sign’s initial word coincides with
the earlier marks’ sole word, the signs are considered similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As both signs will be perceived as referring to size,
they are conceptually identical to that extent. However, the contested sign identifies
the object to which its initial word refers and even though this second word will
receive less attention, it still has a differentiating capability to a certain extent. Based
on all this, the signs are conceptually similar to a low degree.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
According to the opponent, the earlier trade marks enjoy a high degree of
distinctiveness as result of their long standing and intensive use in connection with all
the goods and services invoked in the present proceedings. This claim must be
properly considered given that the distinctiveness of the earlier trade mark must be
taken into account in the assessment of likelihood of confusion. Indeed, the more
distinctive the earlier mark, the greater will be the likelihood of confusion, and
therefore marks with a highly distinctive character because of the recognition they
possess on the market, enjoy broader protection than marks with a less distinctive
character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
The opponent submitted, in particular, the following evidence:
Affidavit by the opponent’s legal counsel. It contains figures on the number of
cars sold (over hundred thousand cars per year in the EU, in 2003-2013), the
sales figures on ‘Mini’ merchandise products (over one million euros per year in
Germany) and on the marketing expenditure (over EUR two million, in 2012);
Wikipedia articles about the history of the Mini cars, as well as on volume of
sales covering the relevant period for the present proceedings.
Press articles from Germany and the UK, provided as a sampling of a list of
over five thousands press articles;
Copies of the cover of books on the history of Mini cars;
Brochures of Mini cars as well as Mini lifestyle products, as presented in
German and UK materials, dated between 2009-2016. The goods include,
among other items, stationery and toy cars;
List of awards received by the opponent both for its cars and for its
advertising and media campaigns;
Decision on Opposition No B 2 412 917 page: 8 of 10
Results of a survey of brand awareness conducted in 2002 and 2008 in the
UK. It shows a high public awareness of the ‘Mini’ car brand;
Reports of various sports, educational and networking events under the ‘Mini’
brand, in the years 2011 and 2016;
Judgments of national courts confirming the reputation and well-known
character of the ‘Mini’ mark.
Having examined the material listed above, the Opposition Division concludes that
the earlier trade marks have acquired enhanced distinctiveness through their use on
the market. The evidence as a whole clearly demonstrates the long-standing
recognition of the ‘Mini’ brand, in particular in Germany and United Kingdom, and it
shows significant sales figures, advertising expenditures, marketing efforts and, as a
consequence of all these investments, a high public awareness. The opponent’s
submissions also show that its mark has been used for a wide range of goods and
services including those invoked in the present proceedings, such as, for example,
stationery, toys, sporting and cultural events.
e) Global assessment, other arguments and conclusion
Account is taken of the fact that average consumers rarely have the chance to make
a direct comparison between different marks, but must trust in their imperfect
recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323,
§ 26).
Evaluating likelihood of confusion implies some interdependence between the
relevant factors and, in particular, a similarity between the marks and between the
goods or services. Therefore, a lesser degree of similarity between goods and
services may be offset by a greater degree of similarity between the marks and vice
versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
Likelihood of confusion covers situations where the consumer directly confuses the
trade marks themselves, or where the consumer makes a connection between the
conflicting signs and assumes that the goods/services covered are from the same or
economically linked undertakings.
In the present case, the services are identical, the goods are identical or similar to
various degrees and the signs present average degree of similarities on visual and
aural aspects of the comparison. The fact that the only word element in the earlier
marks is reproduced in the contested sign must be viewed as an indication of
similarity of the signs, as has been confirmed in numerous case-law including
judgment of 10/03/2016, T-160/15, Minicargo, EU:T:2016:137, § 29. The differences
between the signs, namely, the typeface, a device in the earlier signs and an
additional word in the contested sign, are not capable of offsetting the impact of the
signs’ identical initial words. In addition, the opponent has shown enhanced and long-
standing public recognition of its ‘Mini’ brand.
In its observations, the applicant argues that many trade marks include the word
‘Mini’ for identical or similar goods and services. In support of its argument the
applicant refers to several trade mark registrations.
The Opposition Division notes that the existence of several trade mark registrations
is not per se particularly conclusive, as it does not necessarily reflect the situation in
the market. In other words, on the basis of register data only, it cannot be assumed
Decision on Opposition No B 2 412 917 page: 9 of 10
that all such trade marks have been effectively used. It follows that the evidence filed
does not demonstrate that consumers have been exposed to widespread use of, and
have become accustomed to, trade marks that include ‘Mini’. Under these
circumstances, the applicant’s claims must be set aside.
Furthermore, the applicant also claims that the opponent’s mark has low
distinctiveness and it had obtained registration for the word ‘Mini’ “merely because of
the mark was actually used for a period of time”. In this regard, it is recalled that an
earlier mark in opposition proceedings must always be considered to have at least a
minimum degree of inherent distinctiveness as has been confirmed by judgment of
24/05/2012, C-196/11 P, F1-Live, EU:C:2012:314, § 40-41. In the present
proceedings, the earlier marks’ distinctiveness has even been enhanced through use,
as explained above in section d).
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registrations Nos 10 374 684 and 9 601 931. It follows that the
contested trade mark must be rejected for all the contested goods and services.
As the earlier rights above specified lead to the success of the opposition and to the
rejection of the contested trade mark for all the goods and services against which the
opposition was directed, there is no need to examine the other earlier rights invoked
by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Michaela SIMANDLOVA Ferenc GAZDA Erkki MÜNTER
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
Decision on Opposition No B 2 412 917 page: 10 of 10
must be filed in writing at the Office within two months of the date of notification of
this decision. It must be filed in the language of the proceedings in which the decision
subject to appeal was taken. Furthermore, a written statement of the grounds for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.